IN THE HEARINGS AND MEDIATION DEPARTMENT OF

THE INTELLECTUAL PROPERTY OFFICE OF SINGAPORE

REPUBLIC OF SINGAPORE

Trade Mark No. 40201705009X

Hearing Date: 6 August 2020

IN THE MATTER OF A TRADE MARK APPLICATION BY

KEEP WADDLING INTERNATIONAL PTE. LTD.

AND

OPPOSITION THERETO BY

(1) COMITE INTERPROFESSIONNEL DU VIN DE CHAMPAGNE, AND

(2) INSTITUT NATIONAL DE L’ORIGINE ET DE LA QUALITE

Hearing Officer: Mr Mark Lim

Principal Assistant Registrar of Trade Marks

Representation:

Mr Foo Maw Jiun and Mr Joshua Woo (Rodyk IP) for the Opponents

Mr Shawn Poon (One Legal LLC) for the Applicant

GROUNDS OF DECISION

1 Keep Waddling International Pte. Ltd. (“the Applicant”) seeks to register:

in Class 33 for “Sparkling wines, all originating from Chile” (“the Application Mark”).

[2020] SGIPOS 10

- 2 -

2 Comité Interprofessionnel du Vin de Champagne (“the 1st Opponent”) and Institut

National de l’Origine et de la Qualité (“the 2nd Opponent”) (collectively “the Opponents”)

oppose the registration of the Application Mark. They rely on four (4) grounds of opposition:

(1) the Application Mark is deceptive;

(2) the use of the Application Mark will violate the Geographical Indications Act

(Cap. 117B) (“GIA”);

(3) the use of the Application Mark will constitute the tort of passing off; and

(4) the Application Mark was applied for in bad faith.1

3 These grounds are all premised, to a greater or lesser extent, on the (alleged) similarity

between the geographical indication “CHAMPAGNE” and the word element “CHAMPENG”

in the Application Mark.2

4 I find that the Opponents succeed on the ground of bad faith, but fail on the other three

(3) grounds of opposition. That, however, is sufficient to prevent the registration of the

Application Mark. I set out my reasons below.

Chronology of Proceedings

5 The Applicant applied to register the Application Mark on 28 March 2017. The

Application Mark was published for opposition purposes on 13 July 2018.

6 The Opponents filed their Notice of Opposition on 13 November 2018. The Applicant

filed its Counter Statement on 12 March 2019.

7 The Opponents filed evidence in support of the opposition on 31 October 2019 and 6

December 2019. The Applicant filed evidence in support of the application on 5 March 2020.

The Opponents filed their reply evidence on 4 June 2020. The Pre-Hearing Review was held

on 23 June 2020, after which the opposition was heard on 6 August 2020.

The Evidence

8 The following Statutory Declarations (“SDs”) were tendered in evidence;

a SD of Mr Vincent Perrin, the General Director of the 1st Opponent, dated 15

October 2019 (“the Opponents’ SD”);

b SD of Ms Marie Guittard, the Director of the 2nd Opponent, dated 21 October

2019;

c Supplemental SD of Mr Perrin dated 3 December 2019;

d SD of Mr Christopher Milliken, the Chief Executive Officer of the Applicant,

dated 5 March 2020 (“the Applicant’s SD”); and

e SD in Reply of Mr Perrin dated 26 May 2020.

1 See Opponent’s Skeletal Submissions (Rebuttal) (“OSSR”) at [2]. These grounds are set out in greater detail

below. 2 See OSSR at [3].

[2020] SGIPOS 10

- 3 -

Applicable Law and Burden of Proof

9 As the applicable law is the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”), there

is no overall onus on the Applicant either before the Registrar during examination or in

opposition proceedings. The undisputed burden of proof in the present case falls on the

Opponents.

Background

10 The Applicant and its related companies have been using the trade mark “PENGWINE”

as their house mark for their wines originating from Chile since April 2004. The “PENGWINE”

house mark was named after the Chilean penguins. Each of the PENGWINE-branded wines is

named after a different penguin native to South America, such as “King”, “Royal”, “Emperor”,

“Chinstrap” and “Rockhopper”. According to Mr Milliken, this is “part of the overall business

strategy.”3

11 PENGWINE-branded wines have been sold to consumers in various countries,

including Singapore and many countries in South East Asia, Chile, the United States and China.

The wines have also been promoted through print media, social media and sponsorship of

various events. There have been numerous media articles featuring the Applicant and its wines.

Sales of PENGWINE-branded products in Singapore have exceeded SGD 50,000 in 2015;

SGD 200,00 in 2016; SGD 450,000 in 2017; SGD 300,000 in 2018; and SGD 300,000 in 2019.4

12 The 1st Opponent is a French trade association mandated under French law to represent

the interests of all operators (including growers, cooperatives and production houses) with respect

to the “CHAMPAGNE” geographical indication, and is also charged to protect the geographical

indication around the world. To achieve this worldwide mandate, the 1st Opponent works with

the 2nd Opponent, a national French public administrative institution under the French Ministry

of Agriculture and Food that is responsible for the implementation of French policy on official

signs of identification of the origin and quality of agricultural and food products in France and

abroad.5

13 When used in connection with wine, the “CHAMPAGNE” geographical indication refers

to wine adhering to detailed production requirements such as being made from grapes of a specific

type, and grown in specific areas in the Champagne region in France.6

14 “CHAMPAGNE” has been exported outside France since 1814, and "CHAMPAGNE"

was first recognized as a geographical indication in 1919. Worldwide sales of “CHAMPAGNE”

have exceeded €4 000 000 000 per year since 2006 (save for 2009). In Singapore, sales have

exceeded €22 000 000 per year since 2011. Advertising and marketing activities worldwide and

in Singapore include widespread and intensive advertisements in the print, radio and television

media as well as via the internet and social media channels. “CHAMPAGNE” has also been

endorsed by numerous celebrities, is featured at many high-profile public events, and is the

subject matter of multiple global competitions.7

3 See Applicant’s SD at [6] - [8]. 4 See Applicant’s SD at [10] - [20]. 5 See Opponents’ SD at [3]. 6 See Opponents’ SD at [5] and Exhibit VP-3. 7 See Opponents’ SD at [6] - [14], [16] - [23] for details.

[2020] SGIPOS 10

- 4 -

MAIN DECISION

Ground of Opposition under Section 7(4)(b) TMA - Deceptiveness

15 Section 7(4) TMA reads:

(4) A trade mark shall not be registered if it is —

(a) contrary to public policy or to morality; or

(b) of such a nature as to deceive the public (for instance as to the nature,

quality or geographical origin of the goods or service).

(emphasis added)

16 Parties agree that the legal position in relation to this ground of opposition is as set out

in the High Court decision of Scotch Whisky Association v Isetan Mitsukoshi Ltd [2020] 3 SLR

725 (“Scotch Whisky”) and the decision of the IP Adjudicator in the IPOS case of Starbucks

Corporation v Morinaga Nyugyo Kabushiki Kaisha [2017] SGIPOS 18 (“Starbucks”).

17 Their disagreement lies in the application of the law to the facts of the present case.

The Legal Position

18 It would be convenient to first set out the applicable legal principles. I have attempted

to summarise them as follows:

a Section 7(4)(b) TMA prevents the registration of deceptive marks. It is an

absolute and not a relative ground for refusal.8 Therefore, any deceptiveness

must be inherent in the mark itself, as opposed to deception caused by the

similarity of the mark to another. The provision is designed for the protection

of the public, and not of other traders. This resonates with the overall object and

purpose of Section 7(4) TMA as a whole, which is concerned with marks that

are objectionable because they are contrary to public policy or morality.

b The “public” in the context of Section 7(4)(b) TMA does not refer to the

“general public” but the public in the general context of the relevant trade.

Therefore, in assessing whether there is any deception, the mark must be

considered against the goods or services applied for, and in the general context

of the relevant trade.

c The factors which impact the question of public deception under Section 7(4)(b)

TMA may include:

i the nature of the mark and the impression it communicates/conveys to

the public;

ii the nature of the goods claimed;

8 Section 8 TMA sets out “relative grounds for refusal of registration.” Under this section, the reasons for refusing

to register a trade mark are considered “relative” to other earlier rights. In contrast, Section 7 TMA sets out

“absolute grounds for refusal of registration.” Unlike “relative” grounds which deal with conflicts with earlier

rights, “absolute” grounds are mainly concerned with the nature of the mark applied for itself.

[2020] SGIPOS 10

- 5 -

iii the connection which the geographic reference has with the goods

claimed;

iv the knowledge and characteristics attributable to the public; and

v the trade/industry practice.

d If a mark gives rise to an expectation (e.g. as to the geographical origin of the

relevant goods or services) which will not be fulfilled, then registration will be

refused. The expectation must be a real one, as opposed to something obscure

or fanciful. The consumer is reasonably observant and circumspect, and thus

sufficiently alert and sensible such as not to need protection from claims that

might only deceive a relatively small number of customers. Overall, what is

alleged to be misleading must be sufficiently serious and likely to affect the

economic behavior of the public. The applicable threshold for deception is that

of a “real tangible danger” rather than a “cause to wonder”.

(See Scotch Whisky at [10], [11] and [23] and Starbucks at [134] - [142], [147], [150]

- [161] (and the authorities cited in these cases).)

19 It is useful to briefly examine how the above legal principles were applied in the Scotch

Whisky and Starbucks cases.

20 In Scotch Whisky, the respondent applied to register the trade mark “Isetan Tartan” in

Class 33 (all alcoholic beverages except beer; sake). The High Court accepted that “there is

ample evidence to show that tartan is an iconic symbol of Scotland,” that “from the evidence,

it is clear that Singapore has an enduring association with Scotland,” that “there is sufficient

evidence that the public in Singapore is familiar with tartan, and Scotland more generally,”

and that “[from] the evidence presented… the word ‘Tartan’ is especially evocative of

Scotland.” The court also found that “the average whisky consumer is likely to be particularly

familiar with Scotland and its tartan. In the mind of the whisky drinker, any whisky bearing the

label ‘tartan’, whether it be accompanied by the word ‘Isetan’, will call to mind Scotch whisky.

The nature of the deception is also intensified because Scotland is globally renowned for its

whisky.” On these facts, the court held that the use of “Isetan Tartan” on non-Scotch whisky

products would deceive the relevant public (i.e. consumers who drink and purchase whisky) as

to the products’ geographical origins. Registration of the mark would have been allowed if

whisky that is not Scotch whisky was excluded from the application. (See Scotch Whisky at

[2], [11], [15] - [19], [21] and [47].)

21 In Starbucks, the applicant applied to register the trade mark in

respect of various goods, including coffee. Mt Rainier is the name of a mountain in Seattle and

the words in smaller font below the device of a mountain read “The Mountain of Seattle”. The

opponent’s complaint, in essence, was that the mark implies that the goods originate from

Seattle when they do not. The IP Adjudicator accepted that Seattle has a reputation for coffee

from the perspective of the Singapore public, though she noted that other places and countries

such as Italy and Australia also have strong and vibrant coffee cultures. She found that the

[2020] SGIPOS 10

- 6 -

dominant impression of the mark is “Mt Rainier”, and that the phrase “The Mountain of

Seattle” is informative (i.e. that Mt Rainier is a mountain in Seattle) rather than serving as a

reference to the city of Seattle as such. Based on the evidence, she did not accept that the

average Singapore coffee drinker would make the link between Mt Rainier and Seattle. She

noted that “it is common practice, amongst businesses in the food and beverage industry

operating in Singapore and worldwide, to include geographical names or geographical icons

in their marks, regardless of where the products literally originate. Such references may inform

as to the particular inspiration, ambience, imagery, type of cuisine/beverage, or concept of the

food/beverage product or service. The Applicant points to Georgia Coffee, Vermont Coffee,

Java Curry, Café de Paris, and Paris Baguette as examples” (at [182]; emphasis in original).

After reviewing the evidence, she found that “the relevant consumer will simply regard the

Application Mark as a fanciful brand logo in the absence of any expression which makes a

plain statement as to geographical origin, such as ‘Seattle’s Best Coffee.” (See Starbucks at

[2], [145], [162] - [184], [187] - [192].)

22 As can be seen from these cases, whether or not an objection under Section 7(4)(b)

TMA is made out depends very much on the facts and evidence adduced in each specific case.

23 Before moving on to examine the facts in the present case, it is worth repeating the IP

Adjudicator’s concluding remarks in Starbucks (at [193] - [194]):

193 … it is common for traders, especially in light of enhanced globalisation and

travel… when sourcing for a trade mark, to borrow their concept or inspiration, so to

speak, from something or somewhere, including landmarks, places, personas, locations

and countries. This is part and parcel of a brand story, which – I am inclined to think –

a customer will reasonably expect, considering the practices of the trade. Unless a

particular reference to a geographical connotation is overt and obvious in the context

of the specific goods, such references will, more likely than not, be considered fanciful

in the mind of the average consumer.

194 Ultimately, if a brand does not live up to its story, it is for the market to decide

whether to repeat or to avoid the experience associated with those goods or services to

which the trade mark is applied. Unless a trade mark has made a clear and express

indication or representation which is plainly false, I am of the view that one should be

slow to exercise a refusal at the stage of an application for registration, on the basis

of Section 7(4)(b).

(emphasis in original)

Decision on Section 7(4)(b) TMA

24 At the outset, I note that the Application Mark is

and not “CHAMPENG”.

[2020] SGIPOS 10

- 7 -

25 The goods of interest are “Sparkling wines, all originating from Chile”. I accept the

Opponents’ submission (made in the course of oral arguments) that the “public” in the context

of Section 7(4)(b) TMA refers to consumers who drink and purchase wines or sparkling wines.

I agree that it would be unduly narrow to confine the “public” to consumers who drink sparkling

wines from Chile. In any case, such consumers would in all likelihood also drink other types

of wines, both sparkling and “non-sparkling”.

26 I also readily accept the Opponents’ contention that these consumers would recognise

that wines bearing the “CHAMPAGNE” geographical indication originate (or should originate)

from the Champagne region in France, and (should) adhere to a detailed set of production

requirements (see [13] - [14] above).

27 However, the Application Mark is not for the word “CHAMPAGNE” on its own. Nor

is it for the (invented) word “CHAMPENG”. It is a composite of the invented word

(with the first letter of each consonant in a

slightly larger font size than the rest of the word), and the phrase “UNIQUE, BOUTIQUE,

SPARKLING WINES OF CHILE” in much smaller font and placed below the last two

consonants (i.e. “PENGWINE”) of the invented word.

28 As mentioned at [18(d)] above, the applicable threshold for deception is that of a “real

tangible danger” rather than a “cause to wonder”.

29 I agree with the Applicant that consumers who drink and purchase wines or sparkling

wines are unlikely to be deceived into thinking that wines bearing the Application Mark

originate from Champagne. With reference to the detailed and voluminous evidence adduced

by both parties as to the practices in the trade/industry, my reasons are as follows:

a The geographical origins of wines are always clearly displayed. This is the case

regardless whether the wines are sold in brick and mortar retail outlets9, in

restaurants/bars10, or online11. Consumers would therefore know whether the

wines they are purchasing come from Champagne in France, Chile or

somewhere else. In line with this practice, in the present case, consumers would

be informed that wines bearing the Application Mark come from Chile.

b Champagne refers to a category of wine (i.e. sparkling wine originating from

Champagne in France). Sparkling wines originating from other regions will be

categorised as “Sparkling Wines” (and the geographical origin of the sparkling

wine will be clearly indicated).12 Accordingly, wines bearing the Application

Mark would be categorised under “Sparkling Wines” and consumers will

further be informed that these wines are from Chile.

9 The geographical origin of the wines is displayed on the wine labels themselves: see Applicant’s SD at pages

736-760. 10 The geographical origin of the wines is clearly stated on the menus of restaurants and bars: see Applicant’s SD

at pages 764-925 and Opponents’ SD at pages 371-515. 11 The geographical origin of the wines is displayed on the websites of speciality wine retailers: see Applicant’s

SD at pages 581-734. This is the case for the online stores of supermarkets such Fair Price, Cold Storage and

Redmart as well, though it is less apparent as the images of the wine bottles and the font sizes on the website are

smaller: see Opponents’ SD at pages 517-524. 12 See the evidence referred to in footnotes 10 and 11 above.

[2020] SGIPOS 10

- 8 -

c “Champagne” always appears as a standalone word on its own; it is never

combined with the word “wine”.13

30 Consumers who drink and purchase wines or sparkling wines would be familiar with

these industry practices. I would add that they are also likely to know that champagne is not

spelled as “champeng”. In my view, it is fanciful to suggest that consumers would be deceived.

31 Even in the unlikely situation where some of the relevant consumers are “caused to

wonder” as to whether or not the wines originate from Champagne in France, they would realise

that the wines originate from Chile by simply taking a closer look at the Application Mark, as

this is clearly stated in the mark itself.

32 For the above reasons, the ground of opposition under Section 7(4)(b) TMA fails.

Ground of Opposition under Section 7(5) TMA read with Sections 3(2)(a), 3(4) and 4 of

the GIA – Objections under the Geographical Indications Act

Relevant Statutory Provisions

33 Section 7(5) TMA reads:

7(5) A trade mark shall not be registered if or to the extent that its use is prohibited in

Singapore by any written law or rule of law.

(emphasis added)

34 The “written law” relied on by the Opponents is Sections 3(2)(a), 3(4) and 4 of the GIA.

Surprisingly, the Opponents are not relying on the additional protection accorded to

geographical indications for wines under Section 3(2)(c) GIA.

35 The relevant provisions of the GIA read as follows:

3. — (1) Subject to the provisions of this Act, an interested party of goods identified by

a geographical indication may bring an action against a person for carrying out an act

to which this section applies in relation to the geographical indication.

(2) This section shall apply to the following acts:

(a) the use of a geographical indication in relation to any goods which did not

originate in the place indicated by the geographical indication, in a manner

which misleads the public as to the geographical origin of the goods;

(b) …..

(c) any use of a geographical indication, being a geographical indication

which identifies a wine, in relation to a wine which did not originate from

the place indicated by the geographical indication, whether or not —

(i) the true geographical origin of the second-mentioned wine is used

together with the geographical indication;

(ii) the geographical indication is used in translation; or

13 See the evidence referred to in footnotes 10 and 11 above.

[2020] SGIPOS 10

- 9 -

(iii) the geographical indication is accompanied by any of the words

“kind”, “type”, “style”, “imitation” or any similar word or

expression;14

…

(4) For the purposes of subsection (2), “use of a geographical indication” includes

the use of a trade mark which contains or consists of the geographical indication

in question.

…..

7 Exceptions regarding prior users

(3) Section 3 shall not apply to the use by a person of a trade mark which is identical

or similar to a geographical indication if —

(a) the application for the registration of the trade mark was made in good faith,

or the trade mark was registered in good faith, under the Trade Marks Act

1998 or any previous law relating to trade marks; or

(b) he, or he and his predecessor in title, have continuously used that trade mark

in good faith in Singapore in the course of trade,

either —

(i) before the commencement of this Act; or

(ii) before the geographical indication in question is protected in its country or

territory of origin.15

…..

[Definition of “geographical indication” in Section 2 GIA]

“geographical indication” means any indication used in trade to identify goods as

originating from a place, provided that —

(a) the place is a qualifying country or a region or locality in the qualifying

country; and

(b) a given quality, reputation or other characteristic of the goods is essentially

attributable to that place;

(emphasis added)

36 It is not disputed that “champagne” is a geographical indication, and that the

Applicant’s goods of interest do not originate from Champagne in France.

37 In the context of the present case, and to summarise the rather wordy provisions in the

GIA reproduced above, to succeed under Section 7(5) TMA read with Sections 3(2)(a), 3(4)

and 4 of the GIA, the Opponents would additionally need to establish that:

a the Application Mark “contains or consists” of the geographical indication

“champagne”; and

14 As mentioned in the preceding paragraph, the Opponents do not rely on Section 3(2)(c) GIA. However, I am

reproducing this provision as it is relevant to the discussion which follows. 15 Section 7(3) GIA is also reproduced as it is relevant to the discussion which follows.

[2020] SGIPOS 10

- 10 -

b the use of the Application Mark would mislead the public as to the geographical

origin of the Applicant’s wines.

38 Had the Opponents relied on Section 3(2)(c) GIA, they would not have needed to

establish the second element (i.e. that the public would be misled).

39 In a similar vein, the Opponents would also not need to establish the second element

had they relied on Section 7(7) TMA as a ground of opposition. Inexplicably, they did not do

so. Section 7(7) TMA reads:

(7) ….. a trade mark shall not be registered if it contains or consists of a geographical

indication in respect of a wine or spirit and the trade mark is used or intended to be

used in relation to a wine or spirit not originating from the place indicated in the

geographical indication.

(emphasis added)

Decision on Section 7(5) TMA read with Sections 3(2)(a), 3(4) and 4 of the GIA

40 The relevant statutory provisions were considered by the High Court in the Scotch

Whisky case. However, this ground of opposition failed at the threshold as the court did not

accept that “Tartan” is a geographical indication, or that the applicant had “used” the “Scotch

Whisky” geographical indication16. Consequently, the issues which arise in the current case

were not considered by the court.

41 As noted at [37] above, to succeed on this ground of opposition, two (2) elements which

the Opponents need to establish are that:

a the Application Mark “contains or consists” of the geographical indication

“champagne”; and

b the use of the Application Mark would mislead the public as to the geographical

origin of the Applicant’s wines.

42 In rejecting the ground of opposition under Section 7(4)(b) TMA, I have found that

consumers who drink and purchase wines or sparkling wines are unlikely to be deceived into

thinking that wines bearing the Application Mark originate from Champagne for the reasons

set out at [29] - [31] above. It is arguable that the threshold to establish that the use of the

Application Mark would mislead the public as to the geographical origin of the Applicant’s

wines under Section 3(2)(a) GIA is lower than that of “deception”. Parties have not addressed

me on this issue. However, it is not necessary for me to make a decision on the applicable

threshold; even if I were to accept that a lower threshold would suffice, the matters set out at

[29] - [31] would, in my view, lead ineluctably to the conclusion that the public would not be

misled into thinking that the Applicant’s wines originate from Champagne.

43 This is sufficient to dispose of the ground of opposition under Section 7(5) TMA read

with Sections 3(2)(a), 3(4) and 4 of the GIA. But in case I am wrong, I now consider whether

the Application Mark “contains or consists” of the geographical indication “champagne”. This

is an important issue since, if the Opponents are able to establish this, they would have been

16 See [34] - [45] of the judgment. It is not necessary for me to discuss these aspects as they do not arise in the

present case.

[2020] SGIPOS 10

- 11 -

able to succeed in an opposition under Section 7(5) TMA had they also relied on Section

3(2)(c), and/or raised Section 7(7) TMA as a ground of opposition. As noted above, these

provisions do not require the Opponents to establish that the public would be misled into

thinking that the Applicant’s wines originate from Champagne.

44 It is not disputed that the Application Mark “contains or consists” of

. The Opponents submit that this is sufficient on the basis that

is similar to “champagne”, applying the well-known test in Staywell

Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another [2014] 1

SLR 911 (“Staywell”)17.

45 On the other hand, the Applicant argues that “Section 3(2)(a) and 3(4) GIA would only

apply to the exact actual geographical indication in question and not to similar indicia”

(emphasis in original).18

46 Among other things, the Applicant points out that “the legislature consciously made a

decision to include the phrase “identical or similar” in Section 7(3) GIA, but not in Section

3(2)(a) GIA or Section 3(4) GIA” (emphasis in original)19 (see [35] above for the text of

Section 7(3) GIA). On this point, the Opponents argue that since “Section 7(3) of the GIA is

meant to be an exception to the uses specified in Section 3 of the GIA… trademarks that are

‘identical or similar’ must thus necessarily fall within the scope of an action brought under

Section 3 if it is to be excepted.”20 I think there is some merit in both arguments and ultimately

Section 7(3) GIA does not help to cast light on how Section 3(2)(a) GIA should be interpreted.

47 Both parties were unable to locate any authorities on the interpretation of what is meant

by the words “a trade mark which contains or consists of the geographical indication in

question” within the meaning of Section 3(4) GIA, or of the almost identical words in Section

7(7) TMA. Does the trade mark in question need to be identical to the geographical indication

in question? If not, how similar must the trade mark be to the geographical indication for it to

fall within these provisions?

48 In the absence of any authorities, I approach this question on the basis of principle.

49 I note that to succeed in an opposition under Section 7(5) TMA read with Section

3(2)(c) and 3(4), or an opposition under Section 7(7) TMA, an opponent only needs to establish

that the mark opposed “contains or consists of a geographical indication”.21 There is no further

requirement to establish that, for example, there exists a likelihood of confusion on the part of

17 See Opponent’s Written Submissions (“OWS”) at [16] - [46]. Very briefly, the test in Staywell entails a

consideration of three aspects of similarity (i.e. visual, aural and conceptual similarities), leading to an overall

conclusion as to whether the marks, when observed in their totality, are more similar or dissimilar: see [15] - [30]

of the decision for a much more detailed analysis. In light of the decision which I have reached (as discussed

below), I do not need to go into these details. 18 See Applicant’s Supplementary Written Submissions (“ASWS”) at [4] - [39]; the text quoted can be found in

[15]. In the alternative, the Applicant argues that even if exact identity is not required, the provision should not be

extended to prohibit the use of signs which just have some similarities to the geographical indication in question:

see ASWS at [51] - [60]. 19 ASWS at [29]. 20 OSSR at [14]. 21 The mark must of course also be used on a wine which does not originate from the place indicated by the

geographical indication. However, this is a given since there would otherwise be no reason for an opponent to

object to the mark in the first place.

[2020] SGIPOS 10

- 12 -

the public, which is necessary if an opposition was brought under Section 8(2)(b) TMA on the

basis that a mark applied for is similar to an earlier trade mark.

50 A useful analogy can be made to the contrast between Section 8(1) and Section 8(2)(b)

TMA. The relevant portions of these provisions read as follows:

8. – (1) A trade mark shall not be registered if it is identical with an earlier trade

mark and the goods or services for which the trade mark is sought to be registered are

identical with the goods or services for which the earlier trade mark is protected.

(2) A trade mark shall not be registered if because –

…..

(b) it is similar to an earlier trade mark and is to be registered for goods or

services identical with… those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public.

(emphasis added)

51 Section 8(1) TMA (cases of “double-identity”, where the marks are identical and the

goods or services are identical) does not require a likelihood of confusion to be established. In

contrast, where the marks are similar and the goods or services are identical, under Section

8(2)(b) TMA, it is necessary to additionally establish that there exists a likelihood of confusion

on the part of the public.

52 In SA Société LTJ Diffusion v Sadas Vertbaudet SA [2003] FSR 34 (“LTJ Diffusion”),

the European Court of Justice (ECJ)22 had to rule on what it means for trade marks to be

considered “identical”. The ECJ held, in material part, as follows:

[48] As regards Article 5(1)(b) of the directive23, the Court has already held that that

provision is designed to apply only if, because of the identity or similarity between the

signs and marks and between the goods or services which they designate, there exists a

likelihood of confusion on the part of the public…

[49] On the other hand, Article 5(1)(a) of the directive24 does not require evidence of

such a likelihood in order to afford absolute protection in the case of identity of the sign

and the trade mark and of the goods or services.

[50] The criterion of identity of the sign and the trade mark must be interpreted strictly.

The very definition of identity implies that the two elements compared should be the

same in all respects […]

[51] There is therefore identity between the sign and the trade mark where the former

reproduces, without any modification or addition, all the elements constituting the

latter.

…..

22 Now known as the Court of Justice of the European Union. 23 Which corresponds to Section 8(2)(b) TMA. 24 Which corresponds to Section 8(1) TMA.

[2020] SGIPOS 10

- 13 -

[53] Since the perception of identity between the sign and the trade mark is not the

result of a direct comparison of all the characteristics of the elements compared,

insignificant differences between the sign and the trade mark may go unnoticed by an

average consumer.

[54] In those circumstances, the answer to the question referred must be that […] a sign

is identical with the trade mark where it reproduces, without any modification or

addition, all the elements constituting the trade mark or where, viewed as a whole, it

contains differences so insignificant that they may go unnoticed by an average

consumer.

53 LTJ Diffusion has been cited with approval in a number of local decisions including

Nation Fittings (M) Sdn Bhd v Oystertec plc and anor [2006] 1 SLR(R) 712 (see [78] - [86])

and Mitac International Corp v Singapore Telecommunications Ltd and another action [2009]

4 SLR(R) 961 (“Mitac”) (see [92] - [96]).

54 To give an example of how the test for “identity” applies in practice, in New Yorker

S.H.K. Jeans GmBH & Co. KG v Daidoh Limited [2017] SGIPOS 1625, my colleague found

the marks and to be identical.

55 I am of the view that it would be appropriate to apply the same test to determine whether

a trade mark “contains or consists of a geographical indication” within the meaning of Section

3(4) GIA and Section 7(7) TMA. This means that, to paraphrase LTJ Diffusion, the relevant

component of the trade mark must: (a) reproduce, without any modification or addition, all the

elements constituting the geographical indication; or (b) viewed as a whole, contain differences

so insignificant that they may go unnoticed by an average consumer.

56 This would capture close misspellings of a geographical indication, where the spelling

may be unfamiliar to the average consumer in Singapore (e.g. “Parmiggiano Reggiano” (with

an extra “g” in “Parmigiano”) instead of “Parmigiano Reggiano”).

57 Further, I note that the protection extended to geographical indications for wines under

Section 3(2)(c) GIA26 is in fact more extensive than the protection for trade marks in “double-

identity” situations under Section 8(1) TMA.

58 Firstly, the protection extended to geographical indications which identify wines covers

situations where the “geographical indication is used in translation” (see Section 3(2)(c)(ii)

GIA) or when the “geographical indication is accompanied by any of the words ‘kind’, ‘type’,

‘style’, ‘imitation’ or any similar word or expression” (see Section 3(2)(c)(iii) GIA).

59 In the present case, for example, protection would extend to “champagner” (the German

translation) and “champansky” (the Russian translation).27

25 The citations in [52] and [53] above were taken from this decision (at [19] and [20]). 26 And also for spirits since the additional protection conferred on spirits under Section 3(2)(d) GIA is identical

to the additional protection for wines under Section 3(2)(c) GIA. 27 See the Opponents’ SD at [9] and page 321 respectively.

[2020] SGIPOS 10

- 14 -

60 Secondly, the comparison under Section 8(1) TMA is mark for mark, whereas under

Section 3(2)(c) GIA (and also Section 7(7) TMA), the comparison can be between a portion of

the mark applied for and the geographical indication.

61 Thus, in the present case, the comparison is between “champagne” and

, and not between “champagne” and the Application Mark as a whole, i.e.

62 In my view, requiring “identity” (in the sense discussed above) between the relevant

portion of the mark complained against and the geographical indication in question is eminently

reasonable. Conversely, applying a test of “similarity” would lean too far in favour of

protecting geographical indications.

63 Applying this test, it is clear that is not “identical” to “champagne”.

It follows that the Application Mark does not “contain or consist” of the “champagne”

geographical indication.

64 For the reasons set out above, the ground of opposition under Section 7(5) TMA read

with Sections 3(2)(a), 3(4) and 4 of the GIA fails.

Ground of Opposition under Section 8(7)(a) TMA – Passing Off

65 Section 8(7)(a) TMA reads:

8(7) A trade mark shall not be registered if, or to the extent that, its use in Singapore is

liable to be prevented —

(a) by virtue of any rule of law (in particular, the law of passing off) protecting

an unregistered trade mark or other sign used in the course of trade.

66 To succeed in a passing off action, the Opponents must prove three elements: (a)

ownership of goodwill, (b) a misrepresentation by the Applicant leading to deception, and (c)

damage: see The Audience Motivation Company Asia Pte Ltd v AMC Live Group China [2016]

SGCA 25 at [80].

67 Goodwill, in the context of passing off, is concerned with goodwill in the business as a

whole, and not specifically in its constituent elements. Evidence of sales and income are a

“proxy for the attractive force of the business”: see Singsung Pte Ltd v LG 26 Electronics Pte

Ltd (trading as L S Electrical Trading [2016] 4 SLR 86 at [58]. It is not disputed that the

Opponents enjoy the requisite goodwill.

68 As for misrepresentation, the comparison is to be made between “champagne” and the

Application Mark as a whole, i.e.,

[2020] SGIPOS 10

- 15 -

69 By virtue of the matters set out at [29] - [31] in the discussion of the ground of

opposition under Section 7(4)(b) TMA, I find that the use of the Application Mark would not

result in any misrepresentation leading to deception.

70 It follows that the Opponents will also not suffer any damage arising from the use of

the Application Mark.

71 The ground of opposition under Section 8(7)(a) TMA therefore fails.

Ground of Opposition under s 7(6) TMA - Bad faith

72 Section 7(6) TMA provides that a trade mark “shall not be registered if or to the extent

that the application is made in bad faith”.

The Legal Position

73 The leading case in this area is the Court of Appeal’s decision in Valentino Globe BV v

Pacific Rim Industries Inc [2010] 2 SLR 1203 (“Valentino”). It is helpful to summarise the

applicable principles which are particularly pertinent in the present case:

a “Bad faith” embraces not only actual dishonesty but also dealings which would

be considered as commercially unacceptable by reasonable and experienced

persons in a particular trade, even though such dealings may otherwise involve

‘no breach of any duty, obligation, prohibition or requirement that is legally

binding’ upon the applicant: Valentino at [28].

b The test for determining bad faith is the combined test of bad faith which

contains both a subjective element (viz, what the particular applicant knows)

and an objective element (viz, what ordinary persons adopting proper standards

would think). Thus, “bad faith” as a concept is context-dependent. In the final

analysis, whether bad faith exists or not hinges on the specific factual matrix of

each case: Valentino at [29].

c Once a prima facie case of bad faith is made out by the opponent, the burden of

disproving any element of bad faith on the part of the applicant would arise:

Valentino at [36].

d An allegation of bad faith is a serious claim to make and it must be sufficiently

supported by the evidence, which will rarely be possible by a process of

inference: Valentino at [30]. (As observed by Professor Ng-Loy Wee Loon in

Law of Intellectual Property of Singapore (Sweet & Maxwell, 2nd Edition,

2014) (“Ng-Loy Wee Loon”) at [21.4.1], footnote 109, this is not an absolute

prohibition against drawing inferences. In support of this observation, Professor

[2020] SGIPOS 10

- 16 -

Ng-Loy cited the decision in Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR

552 (“Festina”) at [115], where the High Court pointed out that a finding of bad

faith was largely, if not invariably, based on circumstantial evidence.)

e Once bad faith is established, the application for registration of a mark must be

refused even though the mark would not cause any confusion: Valentino at [20].

74 It is helpful to look at the Festina case in greater detail. In that case, the appellant was

the proprietor of trade marks which are variations of “FESTINA and device”. The appellant

opposed the respondent’s application to register “J.ESTINA and device” as a trade mark. The

court considered that the respondent’s brand story for the name “J.ESTINA” (the letter “J” was

said to have been derived from “Jovanna” who was an Italian princess and Bulgarian queen)

appeared to be extremely contrived. In any event, the alleged use of Princess Jovanna’s name

did not explain how and why the meaningless word “ESTINA” came into being. The

respondent’s failure to furnish a credible explanation in respect of the derivation of “ESTINA”

was especially pertinent since six out of seven letters were identical in sequence between the

two competing marks, which led to the irresistible conclusion that “ESTINA” was blatantly

copied from “FESTINA”. The High Court held, at [122] - [124], that “[s]uch outright copying

of the Appellant's mark [was] an act that falls short of the acceptable commercial behaviour

observed by reasonable and experienced men in the relevant trade” and that the respondent’s

application was undoubtedly made in bad faith.

75 The court observed at [114] - [116]:

114 … the numerous attempts in drawing the parameters of “bad faith” by various

courts are vivid illustrations of the inherently abstract nature of this concept. The

concept of bad faith is extremely wide in the sense that the courts can infer instances of

bad faith and decide according to the justice of individual cases. Naturally, the court

should also be cautious in not over-extending this concept lest it becomes a weapon of

terror against competitors of trade mark proprietors.

115 The categorisation by Bently & Sherman ([38] supra) as seen above28 hints that

despite the broad nature of the notion of bad faith, one must show some sort of

nexus between the parties in dispute. Otherwise, the notion of bad faith would have to

be decided in vacuum. A clear-cut example of such a nexus would be an outright

copying of the proprietor’s mark such that the two competing marks are practically

identical. However, the nexus may be in the guise of something more subtle. In finding

a nexus between the parties, a parallel may be drawn between ss 8(2)(b) and 7(6) [of

the Act]. For example, there may be cases where although there is some similarity of

marks or of the goods or services, it falls short of confusing similarity (ie, no likelihood

of confusion) within the meaning of s 8(2)(b) [of the Act]. Nevertheless, the evidence

of this similarity may be taken into account and considered against the background facts

from which bad faith may be inferred. In other words, while the finding of bad faith is

largely, if not invariably, based on circumstantial evidence, the party alleging bad faith

needs to show some link between the parties, perhaps by way of a pre-existing

relationship or some acts of association with the proprietor or some nexus between the

two competing marks.

28 The authors noted that instances of “bad faith” can be placed into three categories: (1) no intention to use the

mark; (2) abuse of relationship; and (3) where the applicant was aware that a third party had some sort of claim

to the goodwill in the mark: see Festina at [103].

[2020] SGIPOS 10

- 17 -

116 There may be a fine line between being inspired by another’s trade mark as

opposed to blatant copying or copying with some modifications made to the mark. The

former would not attract punitive measures whereas the latter would lead to the mark

being rejected. Where the dividing line between “inspiration” and “infringement”

should be drawn is a matter best left to the facts peculiar to any case.

76 One final point to note is that although the relevant time for determining whether there

is bad faith is the time of filing the application for registration, in certain cases, the

consideration of matters which occurred after the date of application may assist in determining

the applicant’s state of mind at the date of registration: see, for example, PT Swakarya Indah

Busana v Dhan International Exim Pte Ltd [2010] 2 SLR 109 at [91]. In that case, the defendant

registered “EMPEROR MARTIN” as a trade mark. In actual use, the word “EMPEROR” was

in much smaller font than the word “MARTIN”, which happened to be one of the plaintiff’s

marks.

Decision on Section 7(6) TMA

77 Whether bad faith exists or not hinges on the specific factual matrix of each case (see

discussion at [73(b)] and [75] above). I will look first at the derivation of the Application Mark

as this would cast light on the subjective intention of the Applicant.

78 According to the Applicant, the main component of the Application Mark

“CHAMPENGWINE” was formed by combining the prefix “CHAM” with the Applicant’s

house mark “PENGWINE”. The choice of the prefix “CHAM” is an allusion to the method of

production used to produce the sparkling wine sold under the Application Mark, viz, “methode

champenoise”.29

79 I am unable to accept the Applicant’s explanation, as the evidence clearly establishes

that “CHAMPENG” was indisputably selected because of its similarity to “champagne”. I say

this for several reasons:

a The Applicant undoubtedly knew about champagne, which is well-known to

consumers of wine, much less a producer and retailer of wines such as the

Applicant.

b Apart from a bare assertion in the Applicant’s SD (at [48(c)(ii)]), there is no

evidence at all that the choice of the prefix “CHAM” is an allusion to the method

of production used to produce the sparkling wine sold under the Application

Mark. Instead, as discussed below, the evidence points to “CHAMPENG” being

selected due to its similarity to “champagne”.

c According to the Applicant, the naming convention is for each of its

PENGWINE-branded wines to be named after a different species of penguin

29 Counter-Statement at [24(c)], Applicant’s SD at [48(c)(ii)] and AWS at 120(c). Under this method, “the wine

undergoes a secondary fermentation inside the bottle, creating bubbles (as opposed to the ‘charmat’ method

where the second fermentation takes place in a pressurised tank rather than in a bottle and the wine is then filtered

under pressure and bottled).” : see Applicant’s SD at [48(c)(ii)].

[2020] SGIPOS 10

- 18 -

native to South America.30 Clearly, using a prefix as an allusion to the method

of production of a wine is not in line with this long-standing convention.

d “Methode champenoise” is recognised in the European Union as only to be used

in reference to wines from the Champagne region in France.31 The method of

production for sparkling wines produced in the same way outside the

Champagne region is usually described as “methode traditionelle”32. Although

I agree with the Applicant that the evidence indicates that the description

“methode champenoise” is not proprietary to the Opponents in Singapore33, the

fact remains that this description alludes to champagne.

e Interviews given by Mr Milliken, the Chief Executive Officer of the Applicant,

confirm that the term “ChamPeng” was based on champagne:

i Question: Which of PengWine’s offerings is your favourite?

Answer by Mr Milliken: I love our Chinstrap sparkling wine… Some

customers have even given it a nickname – ChamPengWine!34

ii The wine will be named after the Chinstrap penguin – called as such due

to the narrow black strip under its head. The strap resembles the wire

cage that encases champagne corks.35

80 Although the Application Mark (filed on 28 March 2017) includes the phrase

“UNIQUE, BOUTIQUE, SPARKLING WINES OF CHILE”, this phrase does not appear

when the Applicant actually uses the “ChamPengWine” mark on its sparkling wine.36 In

particular, it is not used in menus listing this wine (as “Chinstrap ChamPengWine 2014”)37 or

in the Applicant’s advertisements for its sparkling wine (advertised as “CHAMPENGWINE

CHINSTRAP”)38. Other instances in the evidence showing use of “ChamPengWine” include:

use of a Facebook handle “Champengwine” in a Facebook post by the Applicant dated 10

February 201839, description of the Applicant’s range of wines as including “our very own

sparkling ChamPengWine” in the Applicant’s write-up (dated 9 March 2019) of an event

which it sponsored40, and reviews of the Applicant’s “ChamPengWine Chinstrap” in

30 See [10] above. 31 Opponents’ SD at [32]. 32 Opponents’ SD at pages 617-618. 33 Applicant’s SD at [48(c)(iii)]. 34 Interview with Mr Milliken dated 14 February 2019 in Robb Report (Singapore): see Applicant’s SD at page

354. 35 Article in The Edge Singapore dated 17 October 2016, which was based on an interview with Mr Milliken: see

Applicant’s SD at page 359. 36 The only instance which I could locate of the Application Mark being depicted as filed is in a photograph

(apparently taken during an event held on 18 August 2018) of Mr Milliken carrying a bottle of wine and standing

beside a banner bearing the Application Mark: see Applicant’s SD at page 222. 37 Applicant’s SD at pages 196 (set menu for dinner; undated), 415 (set menu for dinner included in publication

dated 17 August 2019). 38 Applicant’s SD at page 314 (advertisement in Asian Journeys (December - January 2018)). 39 Applicant’s SD at page 79. 40 Applicant’s SD at page 118. The event in question was the Garden Beats Festival 2019.

[2020] SGIPOS 10

- 19 -

publications dated 10 August 201741 and 28 December 201842. These uses occur after the filing

date of the Application Mark, but can assist in determining the Applicant’s state of mind when

filing the application (see discussion at [76] above).

81 From the above, I readily conclude that the subjective element in the test for bad faith

(i.e. what the Applicant in this case knows) is satisfied.

82 I move on to consider the objective element in the test for bad faith. Would the

Applicant’s dealings be considered to be commercially unacceptable by reasonable and

experienced persons in a particular trade? What would ordinary persons adopting proper

standards think? (See discussion at [73] above for the relevant legal propositions.)

83 I have found, in relation to the other grounds of opposition, that consumers would not

be deceived or misled into thinking that wines bearing the Application Mark originate from

Champagne in France. However, “bad faith” is a separate and distinct ground of opposition.

Once bad faith is established, the application for registration of a mark must be refused even in

the absence of deception, the public being misled or misrepresentation (see discussion at

[73(e)] above).

84 From an objective standpoint, I find that reasonable and experienced men in the wine

trade would take umbrage with the Appellant’s dealings:

a First, as noted in Festina, “outright copying… [is] an act that falls short of the

acceptable commercial behaviour observed by reasonable and experienced men

in the relevant trade” (see discussion at [74] above). For the reasons set out at

[79] above, I have no doubt that the word “CHAMPENG” in the Application

Mark was copied from the “champagne” geographical indication.

b Secondly, I note from the evidence that no other sparkling wine sold online, in

brick-and-mortar retail wine shops or supermarkets, or in restaurants and bars,

have a name that is remotely similar to “champagne”.43

c Thirdly, it is illuminating that the Applicant’s case theory is not that

“CHAMPENG” in the Application Mark was inspired by “champagne” and is

just a playful allusion with no intention to deceive or confuse consumers.

Instead, its position (which I am unable to accept) is that “CHAMPENGWINE”

in the Application Mark was derived by combining the method of production of

the wines in question (i.e. “CHAM”, which is allegedly an abridgment of

“methode champenoise”) and the Applicant’s house mark “PENGWINE”. The

Applicant’s representatives are themselves commercial men. If they thought it

was acceptable to copy the “champagne” geographical indication, why was

there a need to attempt to deny this by asserting a derivation of the mark that is

not supported by the evidence?

41 Applicant’s SD at pages 361-365. Incidentally, the wine is described as being produced by “the Champagne

method of double fermentation” in this article. 42 Applicant’s SD at page 369. 43 See Exhibits CM-11, CM-12, CM-13 and CM-14 of the Applicant’s SD.

[2020] SGIPOS 10

- 20 -

85 It follows that the Opponents have made out a prima facie case of bad faith. As the

Applicant has not put forward any evidence to disprove this, the Opponents succeed on this

ground of opposition.

Overall Conclusion

86 Having considered all the pleadings and evidence filed and the submissions made in

writing and orally, I find that the opposition succeeds on the ground of bad faith under Section

7(6) TMA, but fails on the other three (3) grounds raised by the Opponents. The application

shall therefore be refused.

Costs

87 Under the Act, the Registrar has the discretion on the costs to be awarded. The basis

under which this discretion will be exercised was considered in some detail in the Registrar’s

decision in Ferrero S.P.A. v Dochirnie Pidpryiemstvo “Kondyterska Korporatsilia “Roshen”

[2015] SGIPOS 14 at [96] - [103].

88 Although the Opponents have only succeeded on one (1) out of four (4) grounds relied

on, I find that it was reasonable for the Opponents to have raised the grounds on which they

have failed. At the same time, most of the pleadings, evidence and submissions related to the

grounds on which the Opponents have failed.

89 Overall, I am of the view that it is fair to award the Opponents 50% of their costs, to be

taxed if not agreed.

Date of Issue: 9 September 2020